All companies and businesses have a name, in addition many also have trading and brand names. Over many years such businesses establish goodwill and reputation in such names which many business owners seek to protect.
The first point to evaluate are the advantages of registering such names as trade marks. A registered trade mark confers on the proprietor the right to the exclusive use of the mark in connection with the goods or services for which it is registered. The registered proprietor can also exploit the trade mark, including licensing the trade mark. In addition registration gives the proprietor the right to sue for trade mark infringement if someone uses a mark that is the same as, or similar to the mark, in a way that is likely to damage it or cause confusion in the target market.
The second point to consider are the types of trade mark that can be registered. In general, in order to successfully register a mark, it must be "distinctive" and also capable of graphic representation. Any sign, be it a word, slogan, sound or smell, which satisfies these two tests, in principle, can be registered.
Trade mark applications can be rejected on two grounds. The first are the absolute grounds for refusal and which include the following grounds:
1. The mark is devoid of distinctive character.
2. The mark consists exclusively of signs or indications which may designate the kind, quality, quantity or other characteristics of the goods or services.
3. The mark consists exclusively of signs or indications which have become customary in the current language or in trade practices.
Trade mark applications can also be rejected on relative grounds for refusal and which include the following grounds:
1. The mark is identical to an earlier trade mark registered for identical goods or services.
2. The mark is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark.
3. The mark is identical with an earlier trade mark registered for similar goods or services and there is a likelihood of confusion with the earlier mark.
4. The mark is identical with or similar to an earlier trade mark and the earlier mark has a reputation in the UK and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
5. The mark’s use in the UK is liable to be prevented by any rule of law, in particular passing off.
In order to assess whether your trade mark is at risk of being rejected on relative grounds then you should conduct a search of the trade mark register which contains details of all registered trade marks and also trade mark applications. You can undertake a free search of the trade mark register by using the search facility at the Intellectual Property Office website at: https://www.gov.uk/topic/intellectual-property/trade-marks
In addition to searching the trade marks register it is also advisable to use an internet search engine to search for the mark and to find out if there are any businesses already using your proposed mark but which have not registered the mark. The purpose of such a search is to identify the use of any unregistered marks, since the owners of such marks can in certain instances challenge a later application for trade mark registration. In addition, since they have been using the unregistered trademark prior to a later registration, they can also continue to use the mark after any third party has registered the mark.
Once you have undertaken these searches you will be in a position to determine whether to proceed with a trade mark registration. You can apply for a trade mark online at the Intellectual Property office website at: https://www.gov.uk/topic/intellectual-property/trade-marks
